The paragraphs of Linden Lab’s Answer responding to Minsky’s claims, as with all formal Answers in U.S. legal proceedings, merely respond with admissions or denials of each assertion in Minsky’s Complaint. Linden Lab’s Counterclaims, however, shed some light on its strategy in this case.

Interestingly, Linden Lab is actually seeking, as part of its relief, a declaration from the Court that Linden Lab would be within its rights to terminate Minsky’s account. According to the Terms of Service, of course, “Linden Lab has the right at any time for any reason or no reason to suspend or terminate [a user's] Account,” but it appears that Linden Lab is playing it safe here, both from a legal and a customer-relations standpoint.

Excerpts from the Counterclaims follow.

Linden Lab claims:

60. In addition to its SECOND LIFE mark, Linden has adopted and used the trademark SL in connection with offering its services, by, among other things, displaying the mark SL on its website and in periodicals distributed throughout the United States.

61. In addition, Linden has adopted related marks that incorporate the SL mark.

62. The mark SL has become widely known and associated with Linden’s Second Life virtual world service and, as a result, embodies the substantial goodwill that Linden has accumulated in the marketplace in connection with offering its services.

63. Accordingly, the SL mark is a valuable asset of Linden.

64. Over the years, many of Linden’s devoted fans who were active in Linden’s Second Life virtual world have also used SL alone or in combination with generic terms to refer to Second Life in connection with their activities. For example, Second Life residents used SL plus the generic term “art” to identify their activities concerned with the creation, display, promotion and sale of art in the Second Life environment.

65. On or about June 5, 2007, Linden filed an application with the United States Patent and Trademark Office (“PTO”) to register SL as a trademark for use in connection with providing the Second Life virtual world service. That application, Serial No. 77198345, was examined and approved by the PTO and was published for opposition on September 16, 2008.

66. In or about November 2006, Minsky registered as a user of Second Life and began to engage in art-related activities in the Second Life virtual world.

67. In order to communicate to others that his activities concerned art in the Second Life environment and to benefit from the acclaim and goodwill that the Second Life virtual world enjoyed among the public and that is embodied in the SL mark, Minsky, as others had done before him, began to use in interstate commerce Linden’s mark SL in combination with “art.”

68. Unlike others, however, Minsky formed the intention to usurp this combination of SL and “art” and to attempt to gain exclusive rights in it.

69. Toward this end, on or about March 22, 2007, Minsky filed an application with the United States Patent and Trademark Office (“PTO”) seeking to register SLART as a trademark in connection with his art-related activities.

70. Minsky attached to his application an exemplar of his use of SLART reflecting the tagline, “a critical review and journal of the arts in Second Life.”

71. Minsky falsely claimed in his application that he was entitled to the exclusive use of SL plus ART and that he was not aware of others entitled to use the term in commerce.

72. Minsky also falsely claimed that he was using SLART on a wide variety of services.

73. The PTO initially refused Minsky’s application, correctly observing that the “proposed mark merely describes the feature of applicant’s services,” and that “the term ‘SLART’ is commonly used to describe art within the online world Second Life.”

74. In an effort to overcome this refusal from the PTO, Minsky submitted a response falsely claiming that SLART as he had used it did not refer to art in Second Life but instead was a combination of terms of such as “slut” and “fart,” and pointed the Examiner to an online, user-generated dictionary.

75. In reliance on these false statements, the PTO issued a registration for SLART.

76. Despite Linden’s notice to him that it objects to his use of SLART, Minsky has persisted in using the mark, including in connection with holding himself out as an expert on the Second Life virtual world in order to promote his own commercial activities and to benefit unjustly from the acclaim and goodwill that Linden enjoys as a result of its Second Life online service, and has embarked upon a campaign of harassment and intimidation in an effort to force other users of the Second Life service to cease use of the combination of SL and “art.”

77. Minsky has been using Linden’s SECOND LIFE and SL marks without permission and has taken advantage of Second Life’s popularity to garner attention and monetary gain.

[...]

91. Minsky’s alleged SLART mark wholly incorporates Linden’s SL mark which in turn is widely recognized in the marketplace as a designation of SECOND LIFE and Linden’s
SECOND LIFE services and Minsky’s use of SLART and his campaign of intimidation against users of the Second Life service is likely to cause an association with the SECOND LIFE mark that impairs the distinctiveness of Linden’s famous SECOND LIFE mark, weakens the connection in consumers’ minds between the SECOND LIFE mark and Linden’s services, and tarnishes the SECOND LIFE mark. Minsky’s use of SLART is therefore likely to cause dilution by blurring and tarnishment.

Linden Lab pleads:

FEDERAL TRADEMARK INFRINGEMENT

FEDERAL TRADEMARK DILUTION

UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN

COMMON LAW TRADEMARK INFRINGEMENT

COMMON LAW UNFAIR COMPETITION

CANCELLATION-FRAUD [Regarding the SLART registration.]

BREACH OF CONTRACT

Linden Lab seeks the following relief:

143. That Minsky’s Complaint be dismissed with prejudice;

144. That the Director of the PTO be ordered to cancel Minsky’s United States Trademark Registration No. 3399258 for the mark SLART and to make the appropriate entries upon the PTO’s records reflecting the cancellation;

145. That Minsky, his attorneys and representatives and all of those in privity with or acting under his direction and/or pursuant to his control, be preliminarily and permanently enjoined and restrained, from directly or indirectly:

(a) Using the mark SLART, or terms, marks, symbols or indicia confusingly similar to the SLART, SECOND LIFE and SL marks, in connection with the production, advertisement, promotion, distribution, offering for sale or selling of services related to art.

(b) Performing any acts or using any service marks, trademarks, names, words or phrases that are likely to cause confusion, to cause mistake, to deceive or otherwise mislead the public into believing that the services or goods of Defendant originate with, or are affiliated with, associated with, or sponsored by Linden;

146. That Minsky be required to file with the Court, and serve on Linden, a statement under oath evidencing compliance with any preliminary or permanent injunctive relief ordered by the Court within fourteen (14) days after the entry of such order of injunctive relief;

147. That Minsky, his attorneys and representatives and all of those in privity with or acting under its direction and/or pursuant to its control, be required to deliver up for destruction all advertising, signs, labels, wrappers, packaging, and any other materials bearing the SLART mark;

148. That the Court issue a declaration that Linden is within its rights under the Terms of Service to terminate Minsky’s Second Life account.

149. That Minsky be ordered to pay Linden monetary damages for the harm resulting from his infringement and dilution of Linden’s marks, as described above, in an amount to be determined at trial;

150. That damages be trebled and that Minsky be ordered to pay Linden’s attorneys’ fees on the basis that this is an exceptional case.

Am I the only one who thinks that was a particularly hateful way to characterize the situation? Jeeze ease up on your fellow humans! Nobody is biting the hand that feeds it, rather Minsky is an important contributor to Second Life and an extremely talented, and well know fine artist in the gravity based world.

Richard Minsky has done quite a bit of good work in Second Life, and has been responsible for more good publicity for Second Life than most, despite with the vocal minority of people who are probably just misinformed about his project.

Could it be that RM is helping to define the borders of the IP jungle that exists in this new and uncharted territory? Could it be that it is easy to name call and run a good man down when you have never met him or heard his voice?

Could it be that people lose their civility and malign people who have the courage to stand up for what they believe in?

What did RM ever do to you for this personal attack?

I would respectfully suggest that you might be wrong about Richard Minsky and even like him if you knew him.

@ 2… I actually have totally indifferent views to this situation. as I’ve said on this blog many times in the past… I have no qualifications for any judgements I make, and don’t believe anything I say… I’m just a guy reading the stories and writing comments. I’m actually not attacking anyone….

Truth be known, I am a fan of IP rights, trademarks, and copyrights…. I am not exactly a fan of how Linden Lab decides to respond to situations like this. … so whatever misky’s doing, he’s doing…and whatever people in SL with the term ‘slart’…, they’re doing… whatever the courts decide they will decide….

but this reminds me of Bragg vs Linden Lab…. he went from contributing resident to RL combatant of LL to nothing… and spitting on SL on the way out…

…. so … my question to Minsky is does he want to spend the next year in SL as the one fighting for SLART… and then the following years as the guy that won the court case to own ‘slart’?? Probably, yes, if he feels slart is his. But do the ends justify the means?

but on the other hand I did agree with the TOS
Even though I had issues with it.
But I also understand how out in the open LL is to aggressive litigation.

SO I can see how they would want to cover themselves.

This avatar seems like a nutjob. I even refer to “Second Life” as SL and my friends and family are aware of this reference.

I just am in a position where I would not want to be put in the limelight like this. business wise I am quite invested in the virtual world. But if need be (like almost everyone) I can pack up and forget it all.

not that I would want to lol but it’s obvious minsky didn’t even read the TOS

I like LL I have no complaints even though i have crashed like 10 times today hehe oh well what can you do.

But I can see how the perplexities of the virtual world could eventually eat away at you until you just explode and go out in a blaze of glory.

This dude sounds like the “cash and dash” type
nobody wants to stick it out for the long haul.
(hardly anybody, pardon me)
they just want to make a million and run and not look back.

I have taken the liberty of reading all the documents pertaining to the case that were available on this site.

My opinion is that this is a very serious issue. Linden has continued to alter the TOS of the service to include protections for themselves over the years. Some changes in which I personally cannot see standing up in a court of law. Expressly their desire to warrant all content based on their servers as property of Linden Lab. While I am in favor of corporate protections that ensure the well being and health of the institution, I favor the law that states that a man is worthy of his hire (labor) and that the “works” of the hand by such individual gift is the property of those given the talent to create it.

It’s not only a natural law, but a spiritual law as given of the creator himself that created us. The content is labor of the intellect and I do believe that the forethought and intellectual property as such should be the property of the person that created such content. Not the property of the company in which stores for use the content. This would be like saying your don’t own your property you place in any real life storage because the storage manager wants to protect themselves from theft liability. I also believe that if this area of law were challenged, that the company storing the information claiming ownership would utterly lose the battle on a grand scale.

I do believe that Linden has many times over reached their true authority with the Terms of Service and the expectations they continually “redesign” in terms of self preservation while not considering the words they actually use.

With this case, and with everything I have read on this site including all .pdf documents up to this point, I myself if put in judgment would award the case to the plaintiff. My belief from what I understand, wouldn’t have any claim at the time
the matter occurred. It just appears to me that they came in “after” the fact as they have in past to try to sweep up the mess. And now find themselves in the hot seat for not taking care of the issues and asserting their business needs when it should have been.

This might seem like a silly case. SLART itself seems silly to me to fight over, however after reading thoroughly the arguments I find myself that this person has a very serious and important relationship with the business he has started in SL. Not only with the legally registered paperwork, but with his every day life matters. Who are we to say something is silly when a person with skill applies himself to the fullest to achieve, then be told that the personal intellectual property he had created was of no value due to a name?

Linden will continue to destroy their reputation regardless of this case. It’s been proven, and that is what they tend to do with their decisions. They prop up the Terms of Service only when it is in their best interest. At least, this has been my experience with the company. If Linden wins this case, I would take serious thought to what intellectual property is actually and truly protected in any virtual metaverse.

Of course, I could be entirely wrong…. Well, maybe not entirely.

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About Virtually Blind

From early 2007 to late 2008, Virtually Blind covered legal news, issues, and events that impact virtual worlds, video games, and the 3D internet. The site is no longer updated, though it remains online as a research resource.

Posts and comments on VB were and are not offered as legal advice, and are not confidential attorney-client communication. Posts and comments reflect only the opinion of the author, and do not necessarily represent the opinion of VB's editor, other contributors, sponsors, or any author's employer.